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Exhibit 10.17
CONFIDENTAL
PATENT ASSIGNMENT AGREEMENT
This agreement (hereinafter "Agreement")
is made and effective on the 4th day of June, 2004
("Date of the Agreement")
and entered into and between
HORMOS MEDICAL CORPORATION
PharmaCity, Itainen Pitkakatu 4 B
FIN-20520 Turku, Finland
(hereinafter referred to as "Hormos")
and
UNIVERSITY OF TURKU
FIN-20014, Turun yliopisto, Finland
(hereinafter referred to as the "University")
The University and Hormos are together referred to as
"Parties".
WITNESSETH;
Whereas,
Two researchers of the Institute of Biomedicine at the University,
Prof. Risto
Santti and Dr. Tomi Streng (hereinafter the "Inventors") have in
collaboration
with Hormos studied use of aromatase inhibitors in the treatment of
lower
urinary tract symptoms (LUTS) under a research collaboration
agreement, dated
Feb. 1, 2002. In course of research the Inventors have made an
invention
relating to the method for the treatment of prevention of lower
urinary tract
symptoms or pelvic pain with selective estrogen receptor modulators
(SERMs). The
Inventors have assigned all of their rights to the Invention to the
University.
Whereas,
The University and the Inventors have given information of the
Invention (as
defined hereinafter) to Hormos and the Parties have in
collaboration prepared
and filed a patent application thereof. Hormos is interested in
studying the
usefulness of the Invention to Hormos and the exploitation and
development of
the Invention to commercially viable pharmaceutical product(s).
Whereas,
The Parties have reached a consensus on the transfer to Hormos of
the Invention
and the right to apply for and obtain corresponding Letters Patent
in any
country of the world.
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Furthermore, Hormos and University are interested in and intend to
continue
their co-operation in further study of the mechanisms related to
LUTS.
Now, the Parties agree as follows:
1.
DEFINITIONS:
"Assignee" shall mean any third party to whom Hormos has assigned
its right to
receive royalties, excluding licensee, sub-licensee and a party to
whom Hormos
has sold or assigned the Invention entitling the University to a
one time
payment as set forth in section 4.5.
"Invention" shall mean an invention made by the Inventors as it is
described in
the U.S patent application n:o ***** *************************
filed *****.
"Net Income" shall include all milestone payments, royalties and
other income
based on the commercial exploitation of the Invention and received
by Hormos or
its Assignee. Hormos shall be permitted to deduct from its Net
Income audited
costs of Hormos internal R&D, the payments made to third
parties or to the
University which costs or payments have directly contributed the
development of
the Invention and which costs or payments incurred after the Date
of the
Agreement.
"Patent(s)" shall mean any patent rights to the Invention and any
and all
patents, Letters Patent or patent applications granted or pending
in any country
of the world and based wholly or partly on the Invention, all
reissues,
extensions, substitutions, confirmations, registrations,
revalidations,
additions, continuations in part, refilings and divisions thereof
and any
supplemental protection certificates.
"Product" shall mean any product or product concept on the market
for use by
consumers developed by or on behalf of Hormos utilising the claims
of the
Patents comprising the Invention or any part of the claims.
2.
ASSIGNMENT
2.1.
The University hereby assigns to Hormos:
a) all of its
rights, title and interest in and to the Invention to
the intent that the grant of any Patents thereon shall be in
the
name and vest of Hormos; together with all rights and powers
arising or accrued therefrom including, but not limited to, the
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right to sue for damages and other remedies in respect of any
infringement of such rights or other acts within the scope of
any
claims accompanying the Patent rights.
b) the right to
apply for, prosecute and obtain Patent or similar
protection throughout the world in respect of the Invention
including, but not limited to the right to claim priority from
any filed patent application to the intent that the grant of
any
Patents or similar protection shall be in the name of Hormos.
c) However, the
University and the Inventors shall be entitled, free
of any charge and without any compensation, to perpetually use
the
Invention, whether patented or not, for their further
academic, non-commercial research and for teaching purposes.
Right to commercially use and exploit any new invention which
is
related to the treatment or prevention of lower urinary tract
symptoms or pelvic pain and which is directly and solely
arising
out of exercising such right shall be first offered to Hormos.
2.2.
The University hereby warrants to Hormos that it has an
unrestricted
right and authority to effect the assignment of the Invention.
Furthermore the
University warrants that to the best of its knowledge, the
Invention is free
from encumbrances.
2.3.
The Invention and any information related to the Invention are
understood to be experimental in nature, and except as provided
herein, neither
the University nor the Inventors make any representations or extend
any
warranties of any kind, either express or implied. There are no
express or
implied warranties, responsibilities or liabilities of
merchantability or
fitness for a particular purpose, or that the use of the Invention
or any rights
in and to the Invention, as well as, any information related to the
Invention
will not infringe any patent, copyright, trademark or other rights.
It is
Hormos' responsibility to ensure that the Invention and any rights
pertaining to
the Invention, as well as, any information related to the Invention
are suitable
for Hormos and for Hormos' needs and the University or the
Inventors shall have
no liability for Hormos' use or other action or non-action of the
Invention or
any rights pertaining to it or of any information related to the
Invention.
Neither the University nor the Inventors shall have any liability
with respect
to this Agreement for indirect, consequential, exemplary or
incidental damages
(including without limitation loss of profits, loss of contracts,
business
interruptions) even if they have been advised of the possibility of
such
damages.
This section 2.3. survives the termination or expiration of this
Agreement.
2.4
Liability for claims
of patent infringement presented by third parties
Hormos shall be solely responsible and liable for the relating
costs of
arbitration and other costs for proceedings, as well as, for any
other expenses
and damages related to any claims of patent infringement presented
to Hormos by
third parties. The University and the Inventors shall be totally
free from such
costs, expenses or damages.
This section 2.4. remains in force as long as Hormos or its
Assignee or its
successor is the owner of the Patent(s).
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3. PROSECUTION
OF PATENT APPLICATIONS AND MAINTENANCE OF THE PATENTS
3.1.
After the execution of this Agreement, Hormos shall be responsible
for
filing, prosecution, maintenance of the Patents and any costs
thereto. Hormos is
entitled in its sole discretion to make any decision related to
patenting
strategy. Hormos undertakes to use its best endeavours to obtain a
patent.
3.2.
In case Hormos or its successor in title decides to discontinue
the
prosecution and/or maintenance of all the Patents, Hormos or its
successor
undertakes to primarily offer the Patents free of charge to the
University. In
order to reserve
